Understanding the Trademark Application Process

The trademark application process is a complicated one. In fact, most trademark applicants seek out the legal assistance of a qualified attorney to assist them with the process. Whether you decide to hire an attorney or not, understanding how trademark applications work can help ensure everything goes smoothly. Read on for a basic overview of the process.

Preparing for Application

Before filling out the appropriate forms, there are a few things you, the trademark applicant, must decide. The two most important factors you must consider when choosing a mark are (1) whether your chosen mark is registrable and (2) whether it is a strong mark that will be easy to protect. If you would like assistance to determine whether your proposed mark is registrable, feel free to contact me for assistance. I can help you conduct a trademark search to find out if anyone already claims trademark rights with similar designs or wordings used on products related to your own. Doing so could save you a considerable amount of time and money.

Other factors you must weigh before submitting your application include the following:

  • Mark format – You must choose whether your mark will be a sound mark, a standard character mark or a stylized/design mark.

  • Filing basis – If the mark is already in use, you will need to file for “use in commerce”. If the mark has not yet been used, you will need to file for “intent to use”.

  • Identification of goods and/or services – You must clearly identify the goods and/or services the mark is to represent.

Submitting Your Application

You can fill out an application and submit it online via the Trademark Electronic Application System (TEAS). Make sure you review the USPTO’s trademark fee information page beforehand so that you are aware of the total cost of application fees and acceptable payment methods. When filing remember these two important points:

  1. The application fees are processing fees and are non-refundable even if the application does not result in a registered trademark.

  2. Any information you supply the USPTO during the application process becomes public record. This includes your telephone number, street address, email address and name.

During the application process, you can check the status of your application through the Trademark Status and Document Retrieval (TSDR) system. This system will keep you informed as to the progress of your application and it will remind you of any upcoming filing deadlines that need to be met.

Working with the USPTO Assigned Examining Attorney

After meeting the minimum requirements your case will be assigned to an examining attorney. The examining attorney will determine if the trademark complies with all applicable statutes, conduct a search for any conflicting trademarks and examine the written application, any specimens and the drawing.

If the examining attorney determines the mark does not qualify for registration, they will send you a letter known as an “office action” explaining the reasons why the mark could not be registered. Anytime an office action is issued, the applicant has six months to make corrections, adjustments or changes and respond to the USPTO. If they do not respond within six months, the application will be abandoned.

Receiving Approval or Denial

If the examining attorney determines the mark qualifies for registration, it will be published in the “Official Gazette”, a weekly publication by the USPTO. Any parties who feel they might be damaged by the registration of your mark then have 30 days to file an opposition to registration or a request to extend the time to oppose. If this does not take place, the USPTO will register the mark and send you, the owner, a certificate of registration.  

As you can see, the process is quite lengthy and involved. If you would like to know more about the timing of each particular step in the process, please see the USPTO’s Trademark Application and Post-Registration Process Timelines. If you need assistance completing either of these processes, know that I am available to assist you.

Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida.  She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.